DETAILED ACTION
Claims 1-16 of U.S. Patent Application No. 18/876,808, filed on 19 December, 2024, were presented for examination. In a preliminary amendment also filed 19 December, 2024, new claims 17-20 were added. Claims 1-20 are currently pending in the application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 January, 2025, was filed before the mailing date of this Office Action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to because the figure numbers (Fig. 1, Fig. 2, etc.), reference numerals, and leader lines are hand-drawn. Although the numbers/labels are legible, it is in Applicant’s best interest to provide new drawing sheets with draftsperson-drawn and/or computer-drawn numerals and leader lines. The granted patent will be easier to access by the public and generally more attractive.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “retaining element of the machine” (claim 1, line 7) must be shown or the feature canceled from the claim. No new matter should be entered.
Claim 1 recites in lines 6-7 that the contact element is “connected to the guide unit and/or a retaining element of the machine…” The drawings clearly show the contact element connected to the guide unit. The Examiner could not find anything else other than the guide unit, in the drawings or specification, that could be interpreted as being a retaining element that the contact element is connected to. Therefore the drawings do not support the contact element being connected to the guide unit and a retaining element of the machine, nor do they support the contact element being connected to the guide unit or a retaining element.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The disclosure is objected to because of the following informalities: the above-listed section headings should be inserted for items g1, g2, h, i, and j. As instructed by the MPEP, they should be in upper case (ALL CAPS), without underlining or bold type.
Appropriate correction is required.
Claim Objections
Claim 13 is objected to because of the following informalities:
In lines 4-5 of the claim, the limitation “a sliding contact” should be changed to “the sliding contact” since the sliding contact has antecedent basis from claim 1. As it currently appears, a reader might believe that a new, second sliding contact is being introduced.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, in lines 6-7, that “the contact element being connected to the guide unit and/or a retaining element of the machine”. In reviewing the drawings and written description, the Examiner could not find anything else other than the guide unit that could be interpreted as being a retaining element that the guide unit is connected to. Therefore the limitation was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed, had possession of the claimed invention including one or both of the following options presented by the “and/or” transition in line 6 of claim 1:
a) the contact element being connected to the guide unit and a retaining element of the machine, or
b) the contact element being connected to the guide unit or a retaining element.
Claims 2-20 are rejected for depending from rejected claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the phrase "in particular" (line 10) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 3 recites the limitation "the fluid duct" in line 3. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis in the parent claim for a duct, but not a fluid duct.
Regarding claim 3, line 5 recites the limitation “which contacts the outer wall…” but a reader cannot definitively determine what noun is the basis for the pronoun “which”. It could be the previously mentioned inner wall, retaining part, fluid duct, outer wall, etc.
Claim 4 recites the limitation "the outer wall" in line 4. There is insufficient antecedent basis for this limitation in the claim. No outer wall of the guiding part was recited in the parent claim.
Claim 5 recites the limitation "the cross section" in line 4. There is insufficient antecedent basis for this limitation in the claim. The Examiner believes this particular instance could be remedied by changing “the cross section” to “a cross section” since it is being introduced in the claim chain for the first time.
Claim 6 recites the limitation "the outer wall" in line 4. There is insufficient antecedent basis for this limitation in the claim. No outer wall of the guiding part was recited in the parent claim.
Regarding claim 13, the phrase "in particular" (line 1) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 14, the phrase "in particular" (line 3) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 14, line 5 recites the limitation “which is bridged…” but a reader cannot definitively determine what noun is the basis for the pronoun “which”. It could be the previously mentioned lubricating and cooling fluid, the space between the shaft, or the guide unit.
Claim 17 recites the limitation "the fluid duct" in line 3. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis in the parent claim for a duct, but not a fluid duct.
Claim 20 recites the limitation "the channel opening" in line 3. There is insufficient antecedent basis for this limitation in the claim. The Examiner believes that some extra words inadvertently got deleted or omitted during drafting of the claim, and that line 3 is meant to recite “the channel has an opening in a front face of the guiding part” or something similar.
Claims 2, 7-12, 15-16, and 18-19 are rejected for depending from rejected claim 1.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
With respect to claim 1, and all claims depending therefrom, the prior art does not teach or reasonably suggest, inter alia, a discharge device for discharging electric currents from a rotor part of a machine having a shaft,
the discharge device comprising
a displaceable contact element received at least partially in a guide unit and serving to establish an electrically conductive sliding contact between a sliding contact surface of the contact element provided for forming the sliding contact and a shaft contact surface of the shaft,
the contact element being connected to the guide unit in an electrically conductive manner; and
the contact element being pre-loaded towards the shaft contact surface by a spring element,
the contact element being wetted at least partially, at least in the area of its sliding contact surface, by a lubricating and cooling fluid,
wherein
the guide unit comprises a guiding part for receiving the contact element and a retaining part for receiving the guide part, the retaining part and the guiding part forming a duct for the lubricating and cooling fluid.
Making reference to the prior-art figure excerpts, each accompanied by a brief summary, in the Conclusion section below, the following reasons for allowance will address each reference in succession, and how it contrasts with claim 1.
Concerning Yamagishi vis-à-vis claim 1, Yamagishi is described in more detail below, such that the following logic builds on the listing of limitations (in the Conclusion section) it does meet.
Specifically, if elements 11 and 12 are interpreted as part of the shaft, then there does exist the claimed conductive sliding contact between the contact element [22] and the shaft [2/11/12] but then element 4 becomes the only candidate to be the claimed retaining part, in which case 4 and 21 do not “form a duct”, as required by the claim.
Alternatively, if elements 11 and 12 are considered part of the discharge device instead of the shaft, with 11 specifically being the claimed retaining part, then 11 and 21 do indeed “form a duct” – but in this case the contact element [21] does not form a sliding contact with the shaft [2], as required by the claim.
Thus, Yamagishi does not anticipate claim 1.
Concerning Lee vis-à-vis claim 1, Lee has multiple embodiments wherein:
a) the embodiment of fig. 17 teaches the contact element wetted by a fluid (injected in through port 331), but in this embodiment the guiding part and retaining part do not “form a duct” as required by the claim; while
b) the embodiment of fig. 13 has the ducts [413], formed by the guiding part and the retaining part, which match to the claimed “duct for the lubricating and cooling fluid” of claim 1, is described to the effect that the ducts are “air removal grooves”, leaving no evidence to show or suggest that this embodiment supports wetting the contact element by a lubricating and cooling fluid.
Thus Lee does not anticipate claim 1.
Concerning GB 1477312 A vis-à-vis claim 1, it cannot be said that this reference’s retaining part and guiding part form the reference’s duct. The duct is formed in the contact element [13] using surfaces of the retaining part [10] and guiding part [12] as an extra, passive wall.
Concerning McCracken vis-à-vis claim 1, there is no provision in the reference to wet the sliding contact of the contact element. Although the slip ring might have lubricant on it, inadvertently creating the claimed system, the duct [40] would never receive any of the lubricant.
The Examiner believes there is insufficient evidence extant in the references themselves, either explicit or implicit, to suggest it would be obvious to a person of ordinary skill in the art to borrow one of the features from one of the references cited above/below, and modify one of the other references with it, to make up for the singular respective omission (vis-à-vis claim 1) each of said latter references has. Each embodiment of each reference in PTO Form 892 is its own module/entity, and the Examiner believes that claim 1, even though it defines over each of the references with only one minor feature, is not obvious over any one of them.
For instance, in Lee, if the oil/wetting feature of the fig. 17 embodiment were modified to have the ducts of the fig. 13 embodiment, the ducts would still have to be “air removal grooves” since that is what they are described as, and therefore they would suck out the oil/wetting fluid from the area around the sliding contact surface.
McCracken is too loosely assembled to handle the wetting fluid in the “ducts” it forms, and modifying it with GB 1477312 A to remedy this would just make a device with multiple fluid ducts that have nothing to do with each other.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following prior-art figure excerpts, each accompanied by a brief summary, are included to support or serve as a reference for the reasons for allowance put forth above.
Fig. 1 of Yamagishi (US 2025/0219339 A1) teaches a discharge device for discharging electric currents from a rotor part of a machine having a shaft [2], comprising a displaceable contact element [brush 22] received at least partially in a guide unit [including at least brush holder 21] and serving to establish an electrically conductive sliding contact between a sliding contact surface of the contact element provided for forming the sliding contact and an element [ball 12],
the contact element [22] being connected to the guide unit [21] in an electrically conductive manner, and
the contact element being pre-loaded towards the shaft contact surface by a spring element [23],
the contact element [22] being wetted [with oil] at least partially, at least in the area of its sliding contact surface, by a lubricating and cooling fluid (the Examiner has shaded in gray all the area he believes that oil will reside according to ¶ 0031, 0037, and 0048),
wherein
the guide unit comprises a guiding part [brush holder 21] for receiving the contact element and a retaining part [either housing 4 or first conductive portion 10] for receiving the guide part [21].
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However, if elements 11 and 12 are interpreted as part of the shaft, then there does exist the claimed conductive sliding contact between the contact element [22] and the shaft [2/11/12] but then element 4 becomes the only candidate to be the claimed retaining part, in which case 4 and 21 do not “form a duct”, as required by the claim.
Alternatively, if elements 11 and 12 are considered part of the discharge device instead of the shaft, with 11 specifically being the claimed retaining part, then 11 and 21 do indeed “form a duct” – but in this case the contact element [21] does not form a sliding contact with the shaft [2], as required by the claim.
Lee (US 2023/0353021 A1) has multiple embodiments of interest.
The embodiment of fig. 17 teaches most of the parts of the claimed invention, including the contact element, shaft, sliding contact, guiding part, spring, receiving part, etc., wherein the contact element is wetted by a fluid (injected in through port 331). However, in this embodiment the guiding part and retaining part do not “form a duct” as required by the claim.
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The embodiment of fig. 13 teaches the contact element [420], the guiding part [410], the retaining part [200], the spring (the shaft is not shown), etc. This embodiment does teach the retaining part [200] and the guiding part [410] forming a duct [413] as required by the claim.
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However, the embodiment of fig. 13 is supported by ¶ 0071, which describes “grooves” [413], which match to the claimed “duct for the lubricating and cooling fluid”, as “air removal grooves”. Thus, there is no evidence that this embodiment supports wetting the contact element by a lubricating and cooling fluid.
GB 1477312 A teaches almost all of claim 1, including the contact element [13], guide unit [10/12] including the claimed guiding part [12] and retaining part [10], wherein the contact element [13] makes conductive sliding contact with a shaft [11]. The contact element is wetted by a fluid (in space 18), and a duct [19] exists along the length of the contact element.
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However, it cannot be said that the retaining part and the guiding part form the duct. The duct is formed in the contact element [13] using surfaces of the retaining part [10] and guiding part [12] as an extra, passive wall.
McCracken (US 5,315,199 A) is representative of a group of references in the art-space that comprise all the elements of claim 1, except they are not discharge devices (they are commutator brushes) and there is no provision to wet the sliding contact of the contact element. Although the slip ring might have lubricant on it, inadvertently creating the claimed system, the duct [40] would never receive any of the lubricant.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL K SCHLAK whose telephone number is (703)756-1685. The examiner can normally be reached Monday - Friday, 9:30 am - 6:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Seye Iwarere can be reached at (571) 270 - 5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Daniel K Schlak/Examiner, Art Unit 2834
/OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834
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